Sanofi-aventis v. Global Fulfullment Services Inc.
Case No. D2007-0428
1. The Parties
The Complainant is Sanofi-aventis, Paris, France; represented by Armfelt & Associés Selarl, France.
The Respondent is Global Fulfullment Services Inc., Lewes, Delaware, United States of America.
2. The Domain Names and Registrar
The disputed domain names:
<acheter-acomplia.com>;
<acomplia-apotheke.com>;
<acomplia-europe.com>;
<acomplia-farmacia.com>;
<europe-acomplia.com>;
<kaufen-acomplia.com>;
are each registered with Wild West Domains, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 19, 2007. On March 20, 2007, the Center transmitted by email to Wild West Domains, Inc. a request for registrar verification in connection with the domain names at issue.
On April 4, 2007, Wild West Domains, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant of each of the domain names in issue and providing the contact details for the administrative, billing, and technical contact in each case. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 5, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was April 25, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 30, 2007.
The Center appointed Simon Minahan as the sole panelist in this matter on May 11, 2007. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Panel finds the following background facts.
In 2004, Sanofi-Synthelabo, a French pharmaceutical company, resulting from the merger between Sanofi and Synthelabo, acquired another well-known pharmaceutical company, Aventis itself the result of a merger of HMR (Hoechst Marrion Roussel), and Rhône Poulenc.
The name of the parent company resulting from this operation adopted in August 20, 2004, is Sanofi-aventis, the Complainant herein.
The Complainant Sanofi-aventis is a multinational company present in more than 100 countries across 5 continents. It is part of a multinational pharmaceutical group with significant market capitalization 103,697 million of Euros.
The Complainant has developed and continues to research and develop a pharmaceutical product, known as “Accomplia”, with applications in weight reduction in overweight and obese people and in assisting in quitting smoking without associated weight increase. On February 16, 2004, during an information meeting, the content of which was dispersed on Internet, the Complainant announced results of two Phase III studies indicating its efficacy in these areas. These results were presented to the scientific community at the American College of Cardiology annual meeting in New Orleans on March 9, 2004).
During 2005-2006 (i) several scientific publications were published concerning Acomplia, (e.g. the RIO-Lipids study published in The New England Journal of Medicine) and (ii) a large drug information communication concerning the was released on the Internet.
While not yet released world wide, the Accomplia product has, since June 2006, been authorized for the European Market and is now commercialized in a few countries such as the UK, and Germany.
In anticipation of its worldwide release, the Complainant has ACCOMPLIA trademark registrations or applications for registration current in over 100 countries and, additionally has registered various domain names containing the ACOMPLIA trademark, for example <acomplia.com>, <acomplia.fr>, <acomplia.us>.
The ACOMPLIA mark has been the subject of numerous opportunistic and illegitimate domain name registrations and in turn, numerous UDRP determinations. The present case is one more entry in that litany.
5. Parties’ Contentions
A. Complainant
The Complainant contends that it has trademark rights in the term ACOMPLIA.
It further contends that each of the disputed domain names is confusingly similar to that mark by reason of it wholly comprising the Complainant’s trademark and generic introduced terms which in each case serves to indicate either a banal commercial web activity in connection with the mark or some geographic identifier and in no case serves to distinguish the domain name or rescue it from confusing similarity to the trademark. The Complainant refers to numerous UDRP decisions confirming that contention e.g.:
The Complainant also contends that the introduction of the gTLD identifier “.com” does not diminish or reduce confusion – and refers to the UDRP decisions in support:
The Complainant further contends that the Respondent has no legitimate rights or interests in the domain names or the subject mark and further that its choice of the name indicates an awareness of the Complainant’s mark. As such the Complainant contends the use being made of the mark is not bona fide nor legitimate:
Finally the Complainant contends that in the foregoing circumstances the Respondent’s registration and use of the disputed domain names is directed to diverting Internet traffic to commercial activities of the Respondent by making use of the confusion inherent in the domain name and taking advantage of the Complainant’s good will in the mark and that, as such, such use and registration is in bad faith.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Notwithstanding that the Respondent has not replied to the claims of the Complainant, the Complainant nonetheless has the onus of making out the grounds for transfer or cancellation under the UDRP.
A. Identical or Confusingly Similar
The Panel accepts the Complainant’s contentions set out at Part 5 above and notes the UDRP precedent referred to. It finds that the Complainant has prior trademark interests in the term ACOMPLIA and further finds that each of the disputed domain names is confusingly similar to the Complainant’s mark. Accordingly, the Panel finds that the first element of the Policy has been satisfied.
B. Rights or Legitimate Interests
In the absence of any response or positive evidence of any rights in the Respondent and in the face of evidence of the Complainant of its prior rights and the want of any licence or consent by it to the Respondent, the Panel finds that the Respondent has no right or legitimate interests in the ACOMPLIA mark or, as a consequence, the disputed domain names.
The Panel is of the view that under 4(a)(ii) once the Complainant has made out a prima facie case, as it has here, the burden to establish those rights shifts to the Respondent (see e.g.: Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Time Out Group Ltd. v. Marc Jacobson, WIPO Case No. D2001-0317
Here the Respondent by its silence has left that burden undischarged. ).
Accordingly, the Panel finds that the second element of the Policy has been satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b)(iv) of the UDRP lists as one of the circumstances evidencing bad faith “by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or of a product or service on its website”.
The Panel accepts that in the present proceeding each of the domain names designed to be used for such commercial purposes. It further finds that the registration of the domain names after the Complainant undertook a product launch of the ACOMPLIA product in early 2006, taken together with the commercial flavour of each of the domain names and their use to attract customers indicates that the registration and use is in bad faith.
In this regard the Panel refers to and respectfully adopts the reasoning in the following UDRP decisions:
